Risks and rewards of accelerated examination:new procedures at the USPTO

01/01/2007

An executive of an emerging nanotechnology company knows all too well the value that investors and others place on the early certainty a patent brings to being able to protect the company’s inventions. However, there is a staggering backlog of more than 2,700 published nanotechnology patent applications at the United States Patent and Trademark Office (USPTO), translating to an average of four years until issuance.

According to one study, the current patent backlog means the “volume of nanotech applications will push the USPTO to the breaking point,” to the extent that start-up companies “will be forced to consider alternative IP protection such as that for trade secrets.”1 However, with new accelerated examination procedures in place at the USPTO, a start-up company need not turn to trade secret protection.

The accelerated examination program

On August 25, 2006, the USPTO introduced an accelerated examination program “designed to give applicants quality patents in less time.”2 The goal is to complete examination within twelve months of the filing date of the application.3As a “goal,” the timeframe is not a guarantee and any failure to meet it or other issues relating to the goal is neither petitionable nor appealable.

Not all patent applications are eligible for the new accelerated examination program. Only non-reissue utility or design applications filed under 35 U.S.C. Section 111(a) on or after August 25, 2006 are eligible. And the expedited goal of twelve months only applies if the applicant files a “grantable petition to make special.”

To be granted a petition to make special under the accelerated examination program, an applicant is required to provide specific information to enable review of the application to proceed rapidly and accurately. Unlike standard examination practice in which an applicant is not required to search for prior art, an applicant under the new accelerated examination program is required to conduct a search of the prior art, submit all prior art that is closest to their invention, and explain what the prior art teaches and how their invention is different in an Examination Support Document (“ESD”).

In addition to providing and explaining any prior art references, an applicant must explicitly state how their invention is useful and must show how the written description supports the claimed invention. The program limits the number of claims in each application, and the claims must be directed to a single invention. The program shortens the time period for responding to most USPTO communications and no extensions are permitted; however, there should be an interview with the examiner prior to issuance of a first Office action.

There is no provision for withdrawal from special status once granted. The applicant must file a continuation application and then abandon the parent that was “made special.” This rule could be particularly important to an applicant should the proposed USPTO rule limiting the number of continuations be implemented.4

Potential pitfalls

Nanotechnology is unlike other practice areas: it is multidisciplinary in nature, it is a relatively new and unpredictable technology, and a single patent application can cover multiple, downstream products involving completely distinct markets. For example, U.S. Patent No. 5,424,054 held by IBM directed to a “hollow carbon fiber having a wall consisting essentially of a single layer of carbon atoms” could have market applications from circuits to clothing. Hence, quick prosecution decisions may have unintended, adverse consequences years down the road. Moreover, the strict requirements for accelerated examination provide a target-rich environment for accused infringers during litigation.5

The claims

Ensure the claims are not drafted too broadly. Claims that are too broad may not only have enablement issues (a particular problem for relatively new and unpredictable technologies), but statements made in the ESD that the broad claim language has adequate support may be useful for an accused infringer.

The claims should also not be drafted too narrowly. Apart from the obvious problem of potentially inadequate protection of present and future products, due to the speed at which examination should take place, what happens in this application could adversely affect protection in other countries. For instance, should the expedited application serve as the priority application for a Patent Cooperation Treaty or foreign application, others may look to the expedited proceedings as some sort of precedent.

Finally, as an expedited application can only have claims directed to a single invention, pay attention to the number of inventions being claimed. With new Class 977 directed to nanotechnology, an invention near the boundary lines of this class may provide a ready excuse for a restriction.

Additional specific actions that may be taken include the following:

The pre-examination search: Ensure the search is broad enough to support the claims, any amendment to the claims, and any new claims. An amendment to the claims or a new claim will not be entered if the search is not broad enough.

The examination support document: All statements must be accurate and made with due care to avoid litigation issues. Consider using the ESD as an opportunity to explain concisely why the claimed invention is allowable, e.g., explain any new and unexpected function/properties arising from the nanoscale-claimed component and present evidence of the improved function/properties associated with the nanoscale component, how the nanoscale dimensions are reached over the entire range of the claimed invention, etc.

The interview: Take full advantage of an interview with the examiner because an interview is often helpful to obtain allowance. If a record is made of the interview, make sure it is accurate.

In conclusion, despite all the risks discussed here, the new accelerated examination program should be seriously considered, particularly if there is a need to have a patent sooner rather than later for purposes of attracting investors, precluding infringement, or other compelling reasons.

1. “Nanotech Report Cites Progress, But Warns of Patent Filing Backlog in PTO,” 72 Pat. Trademark & Copyright J. (BNA) 347.
2. See the Background section of “Proposed Rule Changes to Focus the Patent Process in the 21st Century,” http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html.
3. See 71 Fed. Reg. 36323 (June 26, 2006); 1308 OG 106 (July 18, 2006).
4. The USPTO has new proposed rules which, if implemented, will limit the number of claims, number of continuation applications, and amount of material submitted in an IDS.
5. For a complete discussion of how what is said during the prosecution of a patent application may affect the scope of protection, see Todd R. Miller, The “Doctrine of Prosecution Disclaimer” in Construing Patent Claims, 86 J. PAT & TRADEMARK OFF. SOC’Y 931 (2004).

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Todd R. Miller is an attorney in the Intellectual Property & Technology Practice of Jones Day. He can be reached at [email protected].


The article reflects the author’s present views, which should not be attributed to the firm or to any of its clients. The author thanks James W. Peterson of Jones Day for his contributions to this article.